Neutral Citation Number: [2016] EWCA Civ 1006 IN THE COURT OF APPEAL (CIVIL DIVISION) ON APPEAL FROM THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT The Hon Mr Justice Arnold [2015] EWHC 2548 (Pat) Before: Case Nos: A3/2015/3602 A3/2015/3415 A3/2015/3615 A3/2016/0017 Royal Courts of Justice Strand, London, WC2A 2LL Date: 13/10/2016 LORD JUSTICE PATTEN LORD JUSTICE KITCHIN and LORD JUSTICE FLOYD - - - - - - - - - - - - - - - - - - - - - Between: WARNER-LAMBERT COMPANY LLC Appellant - and - (1) GENERICS (UK) LIMITED (trading as MYLAN) (2) ACTAVIS GROUP PTC EHF (3) ACTAVIS UK LIMITED (4) CADUCEUS PHARMA LIMITED Respondents THE SECRETARY OF STATE FOR HEALTH Intervener - - - - - - - - - - - - - - - - - - - - - Richard Miller QC, Tom Mitcheson QC, Miles Copeland and Tim Austen instructed by Allen & Overy LLP for Warner-Lambert Michael Bloch QC, Richard Meade QC and Kathryn Pickard (instructed by Taylor Wessing LLP) for Mylan Richard Meade QC, Adrian Speck QC and Isabel Jamal (instructed by Powell Gilbert LLP) for Actavis Michael Silverleaf QC and Richard Davis instructed by the Government Legal Department for the Secretary of State Hearing dates: 23-26 May 2016 - - - - - - - - - - - - - - - - - - - - - Approved Judgment
Lord Justice Floyd: Introduction 1. In the various appeals which are before the court, three main questions arise. Firstly, did Arnold J correctly hold certain claims of the patent in suit invalid for insufficiency; and, if so, should he have held more claims invalid on that ground? Secondly, was he correct in holding the patentee s application to amend claim 3 of the patent, made after judgment on the issue of invalidity, to be an abuse of the process of the court? Thirdly, if there were any valid claims which were the subject of the allegation of infringement, was the judge correct to hold that there was no infringement of the (Swiss-form, second medical use) claims in the patent? 2. Warner-Lambert Company LLC ( Warner-Lambert ) is the proprietor of European Patent (UK) No. 0 934 061. Although the title of the specification is Isobutyl GABA and its derivatives for the treatment of pain, the derivative of interest is called pregabalin, to which the Swiss-form, second medical use claims are limited. Warner- Lambert markets pregabalin under its trade mark Lyrica for the treatment of neuropathic pain, as well as for its previously known indications of general anxiety disorder ( GAD ) and epilepsy. It does so through Pfizer Ltd ( Pfizer ). Lyrica is one of the Pfizer Group s most successful products. Global sales of Lyrica amounted to approximately $4.6 billion in 2013 with UK sales in the same year amounting to approximately $310 million. Not surprisingly, this is a market of considerable interest to generic pharmaceutical manufacturers both for the existing medical indications and the new. I will refer to Warner-Lambert and Pfizer as Warner-Lambert, without attempting to distinguish between them. Procedural history 3. Generics (UK) Ltd, trading as Mylan, and Actavis Group PTC EHF ( Mylan and Actavis PTC ) commenced separate claims for revocation of the patent on 24 June and 12 September 2014 respectively, relying on the grounds of lack of inventive step and insufficiency. On 8 December 2014 Warner-Lambert commenced a claim for infringement of the patent against Actavis PTC, Actavis UK Ltd and Caduceus Pharma Ltd. I will refer to all the Actavis companies and Caduceus as Actavis. 4. Warner-Lambert applied for an interim injunction to restrain the sales of Actavis generic pregabalin product, which was branded Lecaent. That application came before Arnold J, who dismissed it in a judgment dated 21 January 2015, see [2015] EWHC 72 (Pat). He did so on the twin grounds that Warner-Lambert had no arguable case of infringement, and that, in any event, the balance of justice favoured refusal of the injunction. Actavis then made an application to strike out Warner-Lambert s claim for infringement. That application also came before Arnold J, who struck out the claim for infringement insofar as it was made under section 60(2) of the Patents Act 1977 ( the Act ). Notwithstanding his earlier conclusion that Warner-Lambert had no arguable case of infringement, he allowed Warner-Lambert s infringement claim made under section 60(1)(c) of the Act to proceed to trial: see his two judgments, [2015] EWHC 223 (Pat) and [2015] EWHC 249 (Pat). In so doing, Arnold J recognised that the correct scope to be afforded to Swiss-form second medical use claims was a developing area of patent law. On 28 May 2015 this court dismissed Warner-Lambert s appeal against the refusal of the interim injunction but
allowed an appeal against the striking out of the claim under section 60(2) of the Act: see [2015] EWCA Civ 556 ( Warner-Lambert CoA ). In so doing the court held that, on its view of the law and contrary to that applied by Arnold J, Warner-Lambert s infringement case under both subsections of the Act was arguable: see Floyd LJ at [133] and [140]. 5. The actions themselves then came to trial, again before Arnold J, in June and July 2015. By then Actavis had retaliated with a counterclaim for groundless threats of patent infringement. Arnold J handed down his judgment ( the main judgment ) on 10 September 2015: see [2015] EWHC 2548 (Pat). In the main judgment Arnold J held that: i) none of the claims of the patent lacked inventive step over any of the prior art relied on by Mylan and Actavis; ii) iii) iv) each of claims 1, 3, 4, 6, 13 and 14 of the patent was invalid on the ground of insufficiency; even if claims 1 and 3 had been valid, Actavis would not have infringed those claims pursuant to section 60(1)(c) or section 60(2) of the Act; in consequence, and as a result of certain letters sent out by Warner-Lambert, Pfizer was liable for making groundless threats of patent infringement proceedings. 6. The judge gave both Mylan and Actavis on the one hand and Warner-Lambert on the other permission to appeal against his decision on the issue of insufficiency, Mylan and Actavis contending that the judge should have made more extensive findings of insufficiency. The judge also gave Warner-Lambert permission to appeal in respect of his decision relating to infringement under section 60(1)(c), but not his decision under section 60(2). Floyd LJ later granted Warner-Lambert permission to appeal on the latter sub-section as well. 7. On 1 October 2015 Warner-Lambert made a conditional application to amend the patent. Insofar as these amendments consisted of deletion of entire invalid claims, they were uncontroversial. One amendment, however, sought to rewrite claim 3, the claim to the use of pregabalin to treat neuropathic pain, to add the words caused by injury or infection of peripheral sensory nerves. By the addition of these words Warner-Lambert sought to limit the scope of the claim to peripheral neuropathic pain, and thus to exclude from its scope parts of the claim, in particular central neuropathic pain, that were found to be vulnerable to the insufficiency attack. This amendment was opposed by Mylan and Actavis. The judge directed that the question of whether that part of the application to amend was an abuse of the process of the court should be tried as a preliminary issue. In a further judgment ( the abuse judgment ) given on 25 November 2015, [2015] EWHC 3370 (Pat), Arnold J decided that issue in favour of Mylan and Actavis without deciding the merits of the amendment application. Technical background 8. There is a certain amount of technical background to be traversed before the issues can be addressed. The judge dealt with the background in paragraphs 37 to 82 of his
judgment. Not all of that material is relevant to the issues which remain live on appeal. What follows is a highly abbreviated summary, based on that section of the judgment. The nervous system 9. The nervous system comprises two main parts: the central nervous system and the peripheral nervous system. The central nervous system comprises the brain and spinal cord. The peripheral nervous system comprises the nerves outside those structures. The nervous system includes cells called neurons which transmit information through electrical and chemical signals. Types of pain 10. At the priority date in 1996 pain was classified into a number of different types, although not all neuroscientists and clinicians would necessarily categorise pain types in precisely the same way. i) Nociceptive pain occurs where stimuli such as heat, extreme cold, intense mechanical pressure and chemicals stimulate fibres known as nociceptors. The nociceptors then transmit impulses via the spinal cord to the brain where they are perceived as pain. Nociceptive pain has a bio-protective function in that it alerts the brain to the presence of the noxious stimulus so that appropriate avoidance measures can be taken. This type of pain resolves with treatment of the underlying cause. ii) iii) iv) Inflammatory pain is a type of nociceptive pain. The body s response to an injury involves the release of chemical mediators which increase the sensitivity of nociceptors, causing pain both at the site of injury and in the surrounding area. Neuropathic pain is caused by damage to the nervous system itself. One definition of neuropathic pain is pain initiated or caused by a primary lesion or dysfunction of the nervous system. The lesion or dysfunction can occur either in the peripheral nervous system or the central nervous system. Unlike nociceptive pain, neuropathic pain does not necessarily subside when the noxious stimulus is removed. A wide range of diseases may cause neuropathic pain by their effect on the nervous system. Two of the most common causes of neuropathic pain are diabetes and herpes, which can give rise to diabetic (peripheral) neuropathy ( DPN ) and post-herpetic neuralgia ( PHN ), both examples of neuropathic pain. Peripheral neuropathic pain is the type of neuropathic pain where the lesion or dysfunction is in the peripheral nervous system. v) Central neuropathic pain, sometimes called central pain, is neuropathic pain where the lesion or dysfunction is in the central nervous system. vi) Idiopathic pain is pain of unknown origin.
Hyperalgesia and allodynia 11. The term hyperalgesia describes the increased response to a stimulus that is normally painful. Primary hyperalgesia occurs at the site of injury, whereas secondary hyperalgesia is pain experienced in areas surrounding the injured site. The related term allodynia is used to describe pain that is experienced in response to stimuli that would not normally be expected to cause pain (e.g. light touch). Sensitisation 12. Sensitisation describes the process by which neurons display increased activity with a lower threshold to stimulation. Such sensitisation can occur both at the periphery and centrally. 13. Central sensitisation can be induced by, for example, repeated noxious heat stimuli, tissue injury, tissue inflammation, injury to a nerve or ectopic activity in an injured nerve. It was first discovered as a response in the spinal cord to a barrage of activity in C-fibre nociceptors that detect noxious stimuli and connect the peripheral nervous system to the central nervous system. These stimuli in nociceptor sensory fibres trigger an increase in synaptic strength of neurons in the dorsal horn of the spinal cord. This has been described as an increase in gain in the dorsal horn. Pharmacological treatment may reduce the gain. Animal models 14. A number of animal models are used in testing new drugs for the treatment of pain. The following are of relevance to the issues which we have to decide: i) The rat paw formalin test. Formalin is injected into a rat s paw. This causes the rat to lick and bite its paw because of the pain. The rat s behaviour is then monitored in two phases, the first lasting about 10 minutes and the second lasting about 45 minutes during which the rat s physical behaviour in tending or biting the wound is monitored. ii) iii) The carrageenan test. Carrageenin is injected into the paw of a rat and tests are carried out to determine the extent of thermal or mechanical hyperalgesia. The post-operative pain model. The rat s paw is incised, but the nerve is not damaged. The wound is closed by suture. After 24 hours the rat is assessed for mechanical hyperalgesia and tactile allodynia. The patent in suit 15. The specification begins at [0001] by stating that the invention: is the use of [pregabalin] in pain therapy, as the compound exhibits analgesic/antihyperalgesic action. 16. In [0002] the authors explain that the compound of the invention is a known agent useful in antiseizure therapy for central nervous system disorders of which examples are given. Epilepsy is the first example. The invention is then summarised in [0003] as follows:
The instant invention is a method of using a compound identified below in the treatment of pain, especially for treatment of chronic pain disorders. Such disorders include, but are not limited to, inflammatory pain, postoperative pain, osteoarthritis, pain associated with metastatic cancer, trigeminal neuralgia, acute herpetic and postherpetic neuralgia, diabetic neuropathy, causalgia, brachial plexus avulsion, occipital neuralgia, reflex sympathetic dystrophy, fibromyalgia, gout, phantom limb pain, burn pain, and other forms of neuralgic, neuropathic, and idiopathic pain syndromes. 17. The identified compound is pregabalin or a pharmaceutically acceptable salt thereof. Under the heading Detailed description at [0006] the specification makes another statement of what the invention is: The instant invention is a method of using [pregabalin] or a pharmaceutically acceptable salt thereof as an analgesic in the treatment of pain as listed above. Pain such as inflammatory pain, neuropathic pain, cancer pain, postoperative pain, and idiopathic pain which is pain of unknown origin, for example, phantom limb pain are included especially. Neuropathic pain is caused by injury or infection of peripheral sensory nerves. It includes, but is not limited to pain from peripheral nerve trauma, herpes virus infection, diabetes mellitus, causalgia, plexus avulsion, neuroma, limb amputation, and vasculitis. Neuropathic pain is also caused by nerve damage from chronic alcoholism, human immunodeficiency virus infection, hypothyroidism, uremia, or vitamin deficiencies. Neuropathic pain includes, but is not limited to pain caused by nerve injury such as, for example, the pain diabetics suffer from. (emphasis supplied). 18. The italicised references to neuropathic pain were a particular focus of the arguments on construction to which I will have to come. 19. The specification then describes the results from four animal tests. These are the rat paw formalin test, the carrageenin induced mechanical and thermal hyperalgesia tests, and the post-operative pain test. 20. According to the specification at [0017], the rat paw formalin test showed that the administration of pregabalin dose-dependently blocked the licking/biting behaviour during the late phase of the formalin response. However, pregabalin did not affect the early phase at any of the doses tested. 21. The results from the carrageenin-induced mechanical and thermal hyperalgesia tests are said at [0019] and [0021] to show that pregabalin dose-dependently antagonised the hyperalgesia, but it is common ground that the tests do not distinguish between primary and secondary hyperalgesia. 22. The specification states at [0021] that These data show that gabapentin and [pregabalin] are effective in the treatment of inflammatory pain. The parties
disagreed over whether this sentence was referring to all the animal data up to that point, or only the carrageenin tests. Mylan and Actavis contended that it was the former, and Warner-Lambert the latter. If Mylan and Actavis were right, the sentence might suggest that the patentee was not prepared to make a prediction based on all the animal models going beyond the effectiveness of pregabalin for the treatment of inflammatory pain. In the end, not much turned on this debate. 23. At [0022] and [0023] the specification refers to two assays, described in papers referred to as Bennett and Kim, which are animal models of peripheral neuropathic pain. No test results in accordance with these assays are, however, recorded. The claims 24. The important claims are claims 1 and 3. Claim 1 is in the following terms: Use of [pregabalin] or a pharmaceutically acceptable salt thereof for the preparation of a pharmaceutical composition for treating pain. 25. Claim 3 is to the use according to claim 1, wherein the pain is neuropathic pain. Claim 2, inflammatory pain, is not alleged to be infringed. Lyrica is not licensed for the treatment of inflammatory pain. The remaining claims are to more specific categories of pain: cancer (claim 4); post-operative (claim 5); phantom limb (claim 6); burn (claim 7); gout (claim 8); osteoarthritic (claim 9); trigeminal neuralgia (claim 10); acute and post-herpetic (claim 11); causalgia (claim 12); idiopathic (claim 13); and fibromyalgia (claim 14). The skilled addressee 26. It was common ground before the judge, and remains so before us, that the patent was directed to a team consisting of a neuroscientist and a clinician. The clinician would be a specialist in the treatment of pain, and the patent would be of particular interest to neurologists and anaesthetists. The judge held that, on the issue of plausibility in the light of the animal model results reported in the patent, the neuroscientist would inevitably take the lead. Insufficiency 27. On this appeal the main battle ground was the judge s finding of insufficiency. The judge s conclusions on obviousness were not the subject of the appeal. The law 28. The statutory ground on which the court may revoke a patent for insufficiency is contained in section 72(1)(c) of the Act. It is that: the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art.
29. Insufficiency may be deployed as an attack on validity not only where the directions in the specification are inadequate to enable the skilled person to perform the invention at all (i.e. to produce something falling within a claim), but also where a claim is excessively broad having regard to the patentee s contribution to the art. In Regeneron Pharmaceuticals Inc. and another v Genentech Inc. [2013] EWCA Civ 93; [2013] RPC 28, at paragraphs 100 and 101, Kitchin LJ set out the principles which apply to such an objection of insufficiency: 100. It must therefore be possible to make a reasonable prediction the invention will work with substantially everything falling within the scope of the claim or, put another way, the assertion that the invention will work across the scope of the claim must be plausible or credible. The products and methods within the claim are then tied together by a unifying characteristic or a common principle. If it is possible to make such a prediction then it cannot be said the claim is insufficient simply because the patentee has not demonstrated the invention works in every case. 101. On the other hand, if it is not possible to make such a prediction or if it is shown the prediction is wrong and the invention does not work with substantially all the products or methods falling within the scope of the claim then the scope of the monopoly will exceed the technical contribution the patentee has made to the art and the claim will be insufficient. It may also be invalid for obviousness, there being no invention in simply providing a class of products or methods which have no technically useful properties or purpose. 30. In the present case it is necessary to examine a little further what is meant by the requirement that the specification should make the invention plausible or credible. The requirement originated in the jurisprudence of the Boards of Appeal of the European Patent Office. Similar requirements arise in that jurisprudence in several contexts. For example, it must be plausible that an invention has industrial applicability if it is not to fall foul of the requirement under Article 57 of the European Patent Convention. It also arises in the context of lack of inventive step under Article 56, when applying the line of jurisprudence beginning with the decision of the Technical Board of Appeal of the EPO ( TBA ) in T 0939/92 Agrevo/Triazole herbicides. 31. In T 0609/02 Salk Institute for Biological Studies the TBA was faced in opposition proceedings with a claim to the use of a steroid hormone which fails to promote transcriptional activation of a particular group of receptor genes which was for the preparation of a pharmaceutical for the treatment of AP-1 stimulated tumor formation, arthritis, asthma, allergies and rashes. The patentee argued that the skilled person would be able to find out by testing which steroid hormones both failed to activate the receptors and disrupted AP-1 stimulation of AP-1 responsive genes. Later published material showed that the claims were reproducible and led to the identification of compounds which would be appropriate for use. The Board found that the patent specification provided no evidence at all relating to the invention claimed. No hormone was identified having the dual property of disrupting AP-1 stimulated
transcription and failing to promote hormone regulated transcription. Furthermore no data of any kind was identified indicating that such a hormone, if it were identified, could have an impact on any of the identified diseases. 32. The Board rejected the patentee s submission that the later published data could be admitted to show sufficiency. At paragraph 8 the Board said: Sufficiency of disclosure must be satisfied at the effective date of the patent, ie on the basis of the information in the patent application together with the common general knowledge then available to the skilled person. Acknowledging sufficiency of disclosure on the basis of relevant technical information produced only after this date would lead to granting a patent for a technical teaching which was made at a date later than the effective date of the patent. The general principle that the extent of monopoly conferred by a patent should correspond to, and be justified by, the technical contribution to the art, has to be kept in mind. 33. The Board went on to explain that, where a claim was in the so-called Swiss form (the use of a compound in the manufacture of a medicine for use in therapy), the specification ought to disclose the suitability of the product to be manufactured for the claimed therapeutic application. However, the patent system recognised the intrinsic difficulties that this requirement would place in the way of the patenting of pharmaceuticals if interpreted as requiring evidence of tests in humans or animals. The Board continued at paragraph 9: Yet, this does not mean that a simple verbal statement in a patent specification that compound X may be used to treat disease Y is enough to ensure sufficiency of disclosure in relation to a claim to a pharmaceutical. It is required that the patent provides some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se. Showing a pharmaceutical effect in vitro may be sufficient if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application or,, if there is a clear and accepted established relationship between the shown physiological activities and the disease Once this evidence is available from the patent application, then postpublished (so-called) expert evidence (if any) may be taken into account, but only to back-up the findings in the patent application in relation to the use of the ingredient as a pharmaceutical, and not to establish sufficiency of disclosure on their own." 34. The patentee submitted that there was no purpose in requiring in vitro tests, as these would not themselves be predictive of in vivo efficacy. The Board acknowledged this, but pointed out that an in vitro test would at least establish that the necessary
components ( protagonists ) for the test were available, and could establish a definite link between the ingredient and the mechanism allegedly involved in the disease state. It concluded at paragraph 10: The presence of a cause/effect relationship is, thus, made plausible. For how incomplete the data might be, they nonetheless go one step further towards disclosing the invention without leaving an undue burden to the reader. 35. The Board went on to reject the claim in the case before it, because no such hormone had been identified, and there was not a shred of evidence that switching off AP-1 activation of transcription would not affect the overall metabolism in such a way that would make it unsuitable as a medicament. There was also no evidence that switching off the transcription of all AP-1 responsive genes in a way which would produce relief from the claimed diseases. In fact, as it said at paragraph 11: Otherwise stated, the subject-matter of claim 6, is limitless and untried downstream developments in relation to yet to be demonstrated molecular mechanisms. In the board s judgment, it amounts to no more than an invitation to set up further research programs for which no guidance is forthcoming. 36. As to the post-published material, the Board considered that it indicated that it took a few years of research work possibly involving an inventive step and, therefore, undue burden, to put the claimed subject matter into practice. 37. In T 1329/04 Johns Hopkins University School of Medicine the claim under consideration was to a polynucleotide encoding a polypeptide having GDF-9 activity selected from a list. When addressing inventive step the TBA considered that the problem to be solved was identifying a new member of a super-family known as TGF-β. Whether or not that problem was plausibly solved by the claimed invention depended on whether or not it was plausible that GDF-9 was a further member of that super-family. The TBA pointed to important structural differences between GDF-9 and the super-family, leading to the conclusion that GDF-9 could not be clearly and unambiguously identified as a member of that family. This itself would not have been fatal if it had been demonstrated that GDF-9 in fact played a role similar to members of the super-family. Yet there was, as the board emphasised, no evidence at all in that respect. The TBA concluded (see paragraph 11) that: there is not enough evidence in the application to make at least plausible that a solution was found to the problem which was purportedly solved. 38. As to the post-published evidence, at paragraph 12 the TBA said: This cannot be regarded as supportive of an evidence which would have been given in the application as filed since there was not any. The said post-published documents are indeed the first disclosure going beyond speculation. For this reason, the post-published evidence may not be considered at all. Indeed, to do otherwise would imply that the recognition of the claimed
subject-matter as a solution to a particular problem could vary as time went by. Here, for example, had the issue been examined before the publication date of the earliest relevant post-published document, GDF-9 would not have been seen as a plausible solution to the problem of finding a new member of the TGF-β superfamily and inventive step would have had to be denied whereas, when examined thereafter, GDF-9 would have to be acknowledged as one such member. This approach would be in contradiction with the principle that inventive step, as all other criteria for patentability, must be ascertained as from the effective date of the patent. The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem that it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve. 39. One can draw the following conclusions from these cases: i) A mere assertion that compound X is suitable for treating disease Y is not sufficient without any more to render the invention plausible: Salk [9]; ii) iii) iv) The disclosure of the patent specification does not have to be definitely predictive of the efficacy of the invention: in vitro tests which may well not be reproducible in humans or animals may suffice: Salk [10], [11]; An example of adequate support to amount to a plausible disclosure would be experimental tests, showing that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease: Salk [9]; Later published data are not admissible if they alone render the invention plausible: Salk [9], Johns Hopkins [12]; v) Ultimately the purpose of the requirement of sufficiency is to place the reader in possession of the invention without imposing undue burden on him by way of further investigation or research: Salk [10]. 40. It is true that some passages in Salk appear to go further, and if taken literally might be thought to impose a higher threshold before an invention can be regarded as plausible. For example in paragraph 9 the Board gave the example of a pharmaceutical effect established in vitro which it considered might be sufficient if the observed effect directly and unambiguously reflects the therapeutic application, or if there is a clear and accepted established relationship between showing the physiological activity and the disease. These are, however, no more than examples of ways in which a specification may give adequate data to render an invention plausible. They are not to be read as prescriptive.
41. In Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51; [2012] RPC 6 the Supreme Court was dealing with a case in which a structure-activity relationship between a claimed compound and a group of compounds known to have a particular activity was said to render it plausible that the new compound was capable of industrial application under Article 57 of the European Patent Convention. Summarising the jurisprudence of the EPO, Lord Neuberger PSC said at paragraph 107: The general principles are: (iii) A merely speculative use will not suffice, so a vague and speculative indication of possible objectives that might or might not be achievable will not do (T 0870/04, para.21; T 0898/05, paras.6 and 21); (iv) The patent and common general knowledge must enable the skilled person to reproduce or exploit the claimed invention without undue burden, or having to carry out a research programme" (T 0604/04, para.22; T0898/05, para.6); Where a patent discloses a new protein and its encoding gene: (v) The patent, when taken with common general knowledge, must demonstrate a real as opposed to a purely theoretical possibility of exploitation (T 0604/04, para. 15; T 0898/05, paras.6, 22 and 31); (vi) Merely identifying the structure of a protein, without attributing to it a clear role, or suggest [ing]" any practical use for it, or suggesting a vague and speculative indication of possible objectives that might be achieved", is not enough (T0870/04, paras.6-7, 11 and 21; T 0898/05, paras. 7,10 and 31); (vii) The absence of any experimental or wet lab evidence of activity of the claimed protein is not fatal (T 0898/05, paras. 21 and 31; T 1452/06, para.5); (viii) A "plausible" or reasonably credible" claimed use, or an educated guess", can suffice (T 1329/04, paras.6 and 11; T 0640/04, para.6; T 0898/05, paras.8, 21, 27, and 31; T 1452/06, para.6; T 1165/06 para.25); (ix) Such plausibility can be assisted by being confirmed by later evidence, although later evidence on its own will not do (T 1329/04, para.12; T 0898/05, para.24; T 1452/06, para.6; T 1165/06, para.25);
(x) the requirements of a plausible and specific possibility of exploitation can be at the biochemical, the cellular or the biological level (T0898/05, paras. 29-30). 42. These observations are obviously not all directly applicable to the objection of insufficiency, made as they are in the context of industrial applicability, where all that is necessary is that invention should be made or used in any kind of industry. However there are common principles underlying the two objections, in particular the requirement to place the invention or its industrial application in the hands of the skilled reader without undue burden. In paragraph 134 of his judgment, Lord Neuberger described the two objections as having a close connection, indeed overlap. 43. Lord Hope, in paragraphs 149 to 154 explained why the Court of Appeal in that case had adopted too exacting a standard. He was content to accept Jacob LJ s comment, at paragraph 111 of his judgment ([2010] RPC 14) that the word plausibly implies that there must be some real reason for supposing that the statement is true. Lord Hope considered that the Court of Appeal, in various passages, had been looking for a description that showed that a particular use for the product had actually been demonstrated rather than that the product had plausibly been shown to be usable : see paragraph 151. 44. One can detect a similar approach to the question of whether an invention is shown to be plausible in the context of obviousness. In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49; [2008] RPC 28 the claimed invention was a taxol-coated stent said to be suitable for preventing complications ( restenosis ) associated with the insertion of the stent. The trial judge (Pumfrey J) had approached the issue of obviousness on the basis that the specification went no further than proposing that taxol was worth experimenting on and did not establish whether it would be safe or prevent restenosis. On that basis the claimed stent was obvious. After explaining Agrevo and Johns Hopkins as cases where there was nothing in the description to justify the assertion that all the compounds in the class would have herbicidal properties and where the specification contained no more than speculation about whether GDF-9 activity might be useful, Lord Hoffman said at [36]: These cases are in my opinion far from the facts of this case. The specification did claim that a taxol coated stent would prevent restenosis and Conor did not suggest that the claim was not plausible. That would have been inconsistent with the evidence of its experts that taxol was just the thing to try. 45. That passage indicates that it may be difficult to sustain the argument that an invention is not plausible in the face of evidence that the specification would render it obvious to try. At [37] Lord Hoffmann described the requirement of plausibility as a threshold test, although of course that expression does not tell one anything about the height of the threshold. 46. The EPO and domestic cases do, however, indicate that the requirement of plausibility is a low, threshold test. It is designed to prohibit speculative claiming, which would otherwise allow the armchair inventor a monopoly over a field of endeavour to which
he has made no contribution. It is not designed to prohibit patents for good faith predictions which have some, albeit manifestly incomplete, basis. Such claims may turn out to be insufficient nonetheless if the prediction turns out to be untrue. A patent which accurately predicts that an invention will work is, however, not likely to be revoked on the ground that the prediction was based on the slimmest of evidence. Thus, the claims will easily be seen not to be speculative where the inventor provides a reasonably credible theory as to why the invention will or might work. The same is true where the data in the specification is such that the reader is encouraged to try the invention. 47. We heard argument as to whether the invention is only to be treated as plausible if the reader of the specification would be encouraged to try the invention with a reasonable prospect of success, thereby bringing the test for plausibility into line with that sometimes used in the context of obviousness. I do not accept that there is any reason to align the tests in this way. A test designed to prevent speculative claiming need go no further than requiring the patentee to show that the claim is not speculative: the specification does not need to provide the reader with any greater degree of confidence in the patentee s prediction than that. The insufficiency issue and how it arose 48. The way in which the issues in relation to insufficiency developed is of some relevance to the question of amendment and abuse of process. It is convenient to deal with it here, however. 49. The plea of insufficiency relied on by Mylan and Activis is set out in full at paragraph 40 of the abuse judgment. Stripped to its essentials it was alleged that the animal model results which were reported in the patent did not make it plausible that pregabalin would be effective in treating any type of pain as referred to in paragraph [0003], or as claimed in any claim, other than those for which the animal tests provided a plausible model. The plea also contained an allegation that it would require undue effort on the part of the skilled person to identify whether the compound of claim 1 was in fact effective in treating any (and if so which) types of pain referred to in paragraph [0003] or as claimed in any claim, other than those for which the animal tests provided a plausible model. It was the former aspect of the plea, and not the latter, which ultimately succeeded before the judge. 50. This pleading did not of course make it clear which specific types of pain Mylan and Actavis claimed were, and which types were not, rendered plausible by the animal model. It left it open to Mylan and Actavis to identify any type of pain and assert that its treatment by pregabalin was not plausible. Warner-Lambert chose not to ask for further information about the Mylan and Actavis case, however. 51. On 12 December 2014 Mylan and Actavis served a statement of the matters which they contended to be common general knowledge and on 27 January 2015 Warner- Lambert served a reply statement which took the form of an amended version of the Mylan and Actavis statement. The Mylan and Actavis statement asserted that it was common general knowledge that neuropathic pain included pain caused by damage in the central nervous system. Warner-Lambert's response was to restrict neuropathic pain to pain which is caused by damage to peripheral nerves. The Warner-Lambert version also included a section on central sensitisation. Mylan and Actavis accepted
that it was apparent to them from this statement that central sensitisation was to be the basis on which Warner-Lambert would seek to rebut the allegation of insufficiency. They asserted, and the judge accepted, that it was not apparent to them precisely how Warner-Lambert would seek to do so before they received Warner-Lambert s evidence in chief. 52. The parties exchanged evidence in chief on 17 April 2015. It was common ground that the main focus of the insufficiency attack in the Mylan and Actavis evidence in chief was the distinction between neuropathic pain and inflammatory pain. Thus, the case advanced in the evidence of Professor Wood was primarily that central sensitisation was only recognised as a minor feature of inflammatory pain, and not of neuropathic pain at all, and therefore that the data in the patent only supported claims to those pain types which were inflammatory in nature. Neither of the Mylan and Actavis experts distinguished between peripheral neuropathic pain and central neuropathic pain when commenting on the plausibility of the claims in question in their evidence in chief. There were, however, explanatory passages in Dr Scadding s report where he distinguished between peripheral and central neuropathic pain. In particular, he included as Appendix 1 to his report a classification of causes of neuropathic pain, dividing the conditions into five groups. One of the groups was headed Peripheral Nerve, but others were plainly related to the central nervous system, including Spinal Cord, Brain Stem and Brain. 53. The case presented in the evidence of Professor Woolf for Warner-Lambert was that the three animal models were models of central sensitisation and, as such, were appropriate models of any pain types which included central sensitisation as a component. This included all the claimed pain types. 54. Evidence before the judge on the abuse of process application showed that the advisers to Mylan and Actavis first appreciated the importance of showing that there were types of pain with no central sensitisation component on receipt of this evidence in chief. 55. Evidence in reply was exchanged on 22 May 2015. It continued to be the primary case of Mylan and Actavis that the data presented in the patent did not make the treatment of neuropathic pain of any kind plausible. However, in paragraph 7.4 of his second report, Dr Scadding stated: As for neuropathic pain caused by lesions in the central nervous system, it would not occur to the Skilled Clinician that these possessed a central sensitisation component. For example ischaemic and haemorrhagic stroke are relatively common causes of central pain, as is multiple sclerosis (MS). MS typically affects the spinal cord in multiple sites (although it frequently also affects the brain stem, cerebellum, and cerebral hemispheres). Other types of neuropathic pain where the primary cause is a lesion in the central nervous system and which the Skilled Clinician would not expect to possess a central sensitisation component are listed in Appendix 1 to my First Report under the headings Spinal Cord, Brain Stem, and Brain." (emphasis supplied).
56. The judge thought that this passage was adequate to put Warner-Lambert on notice that the answer put forward by Mylan and Actavis to Warner-Lambert s sufficiency case - that central sensitisation was a unifying principle or characteristic - did not assist where the claims in question covered pain with no central sensitisation component. Warner-Lambert, however, adduced evidence on the application that it did not appreciate the significance of that evidence. The judge appears to have accepted that evidence. 57. Skeleton arguments for the trial were exchanged on 22 June 2015. The distinction between peripheral and central neuropathic pain was clearly raised by Mylan and Actavis as part of their argument on the insufficiency of claim 3. Thus, for example, they said that: important types of neuropathic pain such as pain from stroke and multiple sclerosis had no relationship to central sensitisation, since they do not involve any peripheral damage. So the claim is still too broad. 58. When the case was opened, counsel for Actavis drew attention orally to this point. Counsel for Warner-Lambert took no objection to the point being run at that stage, and did not suggest that he was taken by surprise by it. 59. During his cross-examination, Professor Wood volunteered the fact that there were types of pain such as thalamic pain after a stroke where there was no peripheral nervous system involvement at all. He went on to confirm, however, that most types of neuropathic pain involved the peripheral nervous system. 60. Dr Scadding was not cross-examined about paragraph 7.4 of his second report. Instead, it was suggested to him, based on the passage in the patent at [0006], that the use of the term neuropathic pain in the patent was limited to peripheral neuropathic pain. The cross-examination in question is set out at paragraphs 109 and 110 below. This interpretation of the term was later also espoused by Professor Woolf. 61. At this stage, therefore, it is clear that Warner-Lambert and its advisers were aware of the potential problem for the sufficiency of the patent if the claims extended to central neuropathic pain. It would be fair to add that Mylan and Actavis and their advisers must also have been aware at this stage that one of Warner-Lambert s answers to this potential problem was to contend, as a matter of construction, that the monopoly of claim 3 was limited to peripheral neuropathic pain. 62. A further potential answer to the problem that the claims extended to central neuropathic pain (which has no central sensitisation component) was to argue that the unifying characteristic which justified that breadth of claim was that the pain types were all characterised by hyperalgesia and/or allodynia, that is to say, independently of whether there was a central sensitisation component. It is convenient to explain how this potential argument emerged by reference to the decision of the judge on this issue, to which I now turn.
The decision of Arnold J on the issue of insufficiency 63. The judge addressed the issues of construction which arose and which were relevant to the issue of insufficiency at paragraphs 243 to 252 and 257 to 261 of his judgment. These were: the meaning of pain in claim 1 and the meaning of neuropathic pain in claim 3. 64. The judge rejected (at paragraph 251) Warner-Lambert s contention that pain in claim 1 was restricted to types of pain characterised by hyperalgesia and/or allodynia and having a central sensitisation component. Pain meant any type of pain. The judge gave four reasons for rejecting this construction: i) There was no mention of central sensitisation anywhere in the patent, or indeed any suggestion that there was a common mechanism or other link between the disparate kinds of pain listed in [0003]. ii) iii) iv) The list included at least two types of pain which did not have a central sensitisation component, namely fibromyalgia and idiopathic pain. Phantom limb pain would not be regarded as having a central sensitisation component either. The references to neuropathic pain in the patent would not be understood to be confined to peripheral neuropathic pain, and hence as excluding central neuropathic pain. The evidence of Professor Clauw, Professor Wood and Dr Scadding was consistently to the effect that the patent would not be read as being limited to central sensitisation. 65. The judge also rejected the alternative argument advanced by Warner-Lambert in its closing submissions that claim 1 was limited to any type of pain characterised by hyperalgesia and/or allodynia (i.e. without a requirement for the central sensitisation component). In the judge s view the argument had been advanced too late, and had not been explored with any of the witnesses. It also suffered from many of the defects of Warner-Lambert s primary construction. 66. Accordingly the judge accepted Mylan and Actavis s contention that pain would be interpreted in accordance with the definition of pain approved by the International Association for the Study of Pain ( IASP ) in its classification of chronic pain: an unpleasant sensory and emotional experience associated with actual or potential tissue damage or described in terms of such damage. 67. The judge also rejected Warner-Lambert s argument that neuropathic pain in claim 3 was limited to peripheral neuropathic pain. Although the judge said it was striking that this argument was not foreshadowed in Warner-Lambert s evidence or skeleton argument, he did not suggest that this argument was not fully open to Warner- Lambert. He was right to do so given that it had been put to Dr Scadding in crossexamination. As explained above, the argument was advanced in order to exclude central neuropathic pain, and thus insulate the claim against the potential success of
the allegation of insufficiency based on excessive claim breadth. Here, the judge relied on the IASP definition of neuropathic pain: Pain initiated or caused by a primary lesion or dysfunction in the nervous system. Note: see also Neurogenic Pain and Central Pain. Peripheral neuropathic pain occurs when the lesion or dysfunction affects the peripheral nervous system. Central pain may be retained as the term when the lesion or dysfunction affects the central nervous system. 68. As the judge observed subsequently in the abuse judgment, through no fault of his own, he had misquoted this definition in paragraph 50 of the main judgment by building into the definition a distinction between the central and peripheral nervous system. However, the distinction between peripheral neuropathic pain and central pain is made in the Note which follows immediately from the definition, so the judge concluded that the error was not material. 69. The judge s further reasons for rejecting Warner-Lambert s construction of claim 3 were in summary the following: i) The expression neuropathic pain" appeared to be used quite generally in the specification and there was no reference to peripheral neuropathic pain, still less any indication that central neuropathic pain was not intended to be included. ii) The only basis for the construction was the sentence in paragraph [0006] which stated that neuropathic pain is caused by injury or infection of peripheral sensory nerves. This was a correct statement whichever construction was adopted. Furthermore the final sentence of the paragraph, which stated that neuropathic pain includes, but is not limited to pain caused by nerve injury such as, for example [DPN]" was clearly non-limiting language. iii) The patent contained specific subsidiary claims to phantom limb pain and fibromyalgia pain which the judge concluded (see below) were regarded as ones involving central neuropathic pain. 70. Much of Warner-Lambert s remaining answer to the insufficiency case depended on showing that the skilled person would, based on his common general knowledge, understand the patent to be disclosing a principle of wide application. Thus, as the patent specification itself did not expressly state what this principle was, it was necessary for Warner-Lambert to establish that the skilled person would be able to make the necessary inferences in the light of his or her common general knowledge. The judge summarised Warner-Lambert s case in relation to the common general knowledge as follows. (i) central sensitisation was recognised to be a common mechanism in many pain states;